Patent Practice Specialist (Multiple Offices)

Sheppard; Del Mar (CA); Hybrid; USD 43,000 - 92,000; Full time

Benefits offered by this job

Hybrid work schedule

Job summary

Sheppard, Mullin, Richter & Hampton, a global Am Law 50 firm, has an immediate opening for a Patent Legal Specialist to support life sciences and healthcare IP attorneys and agents in all aspects of U.S. patent prosecution.

The role involves handling multiple projects in a fast-paced environment with collaboration across firm personnel, and offers professional growth. The firm prefers candidates for our San Diego office but will consider other U.S.

Qualifications

• A minimum of 5-6 years of recent U.S. patent prosecution experience in a law firm.
• Ability to work independently and within a team environment.
• Strong attention to detail and high degree of accuracy to meet deadlines.
• Proficient working knowledge of filing in USPTO Patent Center.
• Ability to work overtime, evenings, and weekends, as needed.

Responsibilities

• Assist the team with daily workflow tasks and projects in a high volume, fast-paced practice while prioritizing time-sensitive matters.
• Assist the team with both administrative and billable tasks.
• Prepare and file US provisional and nonprovisional applications and related actions.
• Review and respond to USPTO communications and Office Actions.
• Prepare amendment shells and manage IDS filings.
• Prepare client patent portfolio summary reports and maintain files.

Skills

US patent prosecution

Independent work

Attention to detail

Time management

Clear communication

Spelling/grammar

USPTO filing proficiency

Overtime flexibility

Education

High school diploma, some college or bachelor’s degree preferred

Tools

Windows 11

Microsoft Outlook

Excel

PowerPoint

Adobe Acrobat

Zoom

Teams

ChromeRiver

IP docketing system

Job description

Sheppard, Mullin, Richter & Hampton, a global Am Law 50 firm, has an immediate opening for a Patent Legal Specialist to support life sciences and healthcare IP attorneys and agents in all aspects of U.S. patent prosecution. This position requires a solid working knowledge of U.S. patent prosecution rules and procedures, along with strong technical, organizational, and administrative skills.

We prefer candidates who can work from our San Diego office but will consider other candidates who can work from one of our other U.S. offices. The other offices we are considering are: Del Mar, Chicago, Orange County, Los Angeles, Century City, Silicon Valley, and San Francisco.

Job Summary

The role involves handling multiple projects in a fast-paced, deadline-driven environment, requiring sound judgment, prioritization, and flexibility. Foreign prosecution experience is preferred but not required; we are particularly interested in candidates who are eager to learn and develop in this area. Collaboration with firm personnel at all levels is integral to success in the position, which also offers opportunities for professional growth and development.

Essential Functions

• Assist the team with daily workflow tasks and projects in a high volume, fast-paced practice while prioritizing time-sensitive matters.
• Assist the team with both administrative and billable tasks.
• Administrative tasks include submitting conflict checks and opening new matters, including preparation of engagement letters and management of client and case documents, maintaining client’s ShareFile spaces, maintaining working knowledge of client guidelines, procedures, and preferences.
• Research across patent databases such as USPTO, WIPO, Espacenet, and other foreign patent offices.
• Proactively manage casework and assignments, ensuring all deadlines are met in a timely manner. Communicate docket updates to Docketing.
• Prepare and file US provisional and nonprovisional applications, including 371 national stage, continuation, divisional, continuation-in-part, and track one applications.
• Review, process, and act upon, where applicable, all incoming USPTO communications.
• Prepare and file documents with the USPTO, including responses to USPTO pre-examination formalities notices, corrective documents, responses to Office Actions, e-terminal disclaimers, AFCP 2.0 requests, requests for continued examination, and notice of appeals, amendments after allowance, issue fee transmittals, etc.
• Prepare amendment shells.
• Track IDS families and references, obtain references, prepare and file IDS 1449 form/SB08a forms.
• Prepare, send, and track formal documents to inventors/clients for signature. Review and file/record with the USPTO.
• Prepare and file documents related to sequence listings.
• Complete notice of allowance checklist, and prepare and file issue fee transmittals, review and proof issued patents, as applicable, prepare and files certificates of correction, review and proof certificates of correction.
• Prepare client patent portfolio summary reports.
• Contact the USPTO regarding the status of applications.
• Review and proof, when applicable, patent certificates and forward to clients.
• Work diligently to meet the annual billable hours requirement.
• Must be available and able to work during core business hours.
• Attend and actively participate in all training programs suggested by the Director of IP Administration, the Associate Director of IP, and Office Administrator.
• Contribute to the overall success of the Firm by performing other administrative and support duties as assigned.

Required Qualifications

• A minimum of 5-6 years of recent U.S. patent prosecution experience in a law firm.
• Ability to work independently and within a team environment.
• Strong attention to detail, high degree of accuracy, ability to prioritize tasks, and excellent time management skills to meet deadlines.
• Ability to handle multiple projects with changing priorities while working independently in a fast-paced environment.
• Clear and concise communication skills.
• Possess excellent spelling, grammar, and punctuation skills.
• Proficient working knowledge of filing in USPTO Patent Center.
• Ability to work overtime, evenings, and weekends, as needed.

Education

High school diploma. Some college or bachelor’s degree preferred.

Computer/Software Knowledge

Must have proficiency in Windows 11, Microsoft Outlook, Excel, PowerPoint, Adobe Acrobat, Zoom, Teams, ChromeRiver, and experience working with a document management system and an IP prosecution docketing system. Must be able to quickly learn new skills and systems.

Work Environment

• Working indoors with limited exposure to hazards (only those that customarily come up with working in a high-rise building).
• Indoor office work environment in a cubical or workstation.
• The current Firm policy is hybrid–working in the office a minimum of 3 days per week and working from home the rest of the week (subject to change).
• Overtime may be required as the job duties demand.

California: The salary range for this position is $31.00 - $67.00 per hour.

Illinois: The salary range for this position is: $33.00 - $71.00 per hour. This position is eligible for bonuses. This position is also eligible for medical, vision, and dental insurance. Please note that the foregoing compensation and benefit information is a good-faith assessment associated with this position only and is provided pursuant to Illinois Equal Pay Act.

We will consider qualified applicants with criminal histories in a manner consistent with all applicable federal, state, and local laws, including the San Francisco Fair Chance Ordinance and the Los Angeles Fair Chance Initiative for Hiring Ordinance.

Sheppard is an equal opportunity employer and does not discriminate on the basis of race, color, religion, sex, sexual orientation, gender identity and/or expression, national or ethnic origin, ancestry, citizenship, age, marital status, protected medical condition, physical or mental disability, veteran status, or any other characteristics protected by law.